CASELAW-EPO - reviews of EPO Boards of Appeal decisions

EP 3 393 416 B1 relates to a wearable absorbent article.

Brief outline of the case

The opposition was revoked and the opponent appealed.

The board found that claim 1 a granted and AR2 lacked IS.

The patent was maintained according to AR3.

The case is interesting in that, at the beginning of the OP, the proprietor changed the order of the  AR.

AR 2 and 3 were to be considered before AR1.

The opponent’s point of view

The opponent requested not to admit the reordering of the requests.

The opponent argued that it was an amendment to the proprietor’s appeal case which should not be admitted under Art 13(2) RPBA.

In its view AR 2 and 3 being broader than AR 1 the reordering of these requests before AR 1 would affect the procedural economy of the appeal procedure i.e. if AR 2 was considered unallowable, AR 3 and 1 would still have to be discussed, whereas if AR 1 was considered unallowable, AR 2 and 3 would not need to be discussed because these AR would be as a consequence also unallowable.

The board’s decision

Firstly, the factual and legal framework of the proprietor’s appeal has not changed with the reordering of the AR.

Indeed, all of the AR were submitted in opposition proceedings and resubmitted with the reply to the statement of grounds of appeal and were not discussed in the appealed decision as the OD rejected the opposition.

Secondly, as mentioned by the proprietor, the scope of claim 1 of AR 1 is not broader than the scope of claim 1 of AR 2 and 3 but their scope overlap.

Therefore, if claim 1 of AR 1 is unallowable, this does not necessarily imply that claim 1 of AR 2 and 3 would be unallowable. The argument regarding the procedural economy thus failed.

Comments

AR1-3 are clearly carry over requests (CoR). The present board, contrary to some, did not make a fuss over the CoR and did not considered them an amendment under Art 12(4) RPBA, in spite of not having been discussed before the OD.

For the present board, reordering CoR did not change the factual and legal framework of the proprietor’s appeal.

For the present board, reordering CoR did not change the factual and legal framework of the proprietor’s appeal.

The position of the present board is to be supported. Some boards should therefore not stick to a very petty interpretation of the word amendment in Art 12(4) RPBA. The boards have the required discretion to do so.  

Other decisions on the reordering of requests

In T 1436/19, Reasons 1.2, the board came to the conclusion that the reordering of requests filed with the statement of grounds of appeal requested by the patent proprietor could not be taken into account since the proposed reordering of the requests would potentially lead to a situation where the board would have to remit the case to the department of first instance without having decided on requests/claims underlying the decision. This was clearly not helping economy of the procedure. The situation is thus not comparable with the present one as there were not CoR which had o be reordered.

In T 1672/13, Reasons 2, taken under the RPBA07, the change of the order of the AR during OP was considered as an amendment and not admitted in the procedure, as not helping procedural economy. The requests at stake were not CoR, which more over were prima facie infringing Art 123(2).

In T 1105/14, Reasons 3.1.2, taken under the RPBA07, the change of the order of the AR during OP, AR5 becoming the MR, AR4 becoming AR1,the board held that such an amendment is in any case reasonable, since the amendment does not introduce a new set of claims and thus no new procedural matter. The requests at stake were CoR in that the claims at stake corresponded to claims discussed before the OD, with some claims having been deleted.

On the procedure

None of the documents leading to the lack of IS of claim 1 as granted and of claim 1 of AR2 were found in the ISR established by the EPO.

T 2166/22